Ex Parte Olien et al

Patent Trial and Appeal Board

Aug 12, 2016

11531867 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111531,867 09/14/2006
95000 7590 08/16/2016
MILES & STOCKBRIDGE P,C
Immersion Corporation
17 51 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102-3833
FIRST NAMED INVENTOR
Neil Thomas Olien
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO.
T9047-19311US01;
IMM236
CONFIRMATION NO.
1901
EXAMINER
FLORES, ROBERTO W
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
08/16/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Ipdocketing@MilesStockbridge.com
bgoldsmith@milesstockbridge.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteNEIL THOMAS OLIEN, DANNY A. GRANT, and
DANIEL H. GOMEZ 1
Appeal2015-002762
Application 11/531,867
Technology Center 2600
Before MICHAEL J. STRAUSS, SHARON PENICK, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3-6, 8, 9, 11-13, 15-17, and 19-25. Claims 1,
9, and 20 are independent. Claims 2, 7, 10, 14, and 18 are cancelled. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We affirm.2
1 According to Appellants, the real party in interest is Immersion
Corporation. See Appeal Brief 3.
2 Throughout this Decision, we refer to: ( 1) Appellants' Specification filed
Sept. 14, 2006 ("Spec."); (2) the Final Office Action ("Final Act.") mailed
May 15, 2014; (3) the Appeal Brief ("Appeal Br.") filed Oct. 10, 2014; (4)
the Examiner's Answer ("Ans.") mailed Nov. 13, 2014; and (5) the Reply
Brief ("Reply Br.") filed Jan. 13, 2015.
Appeal2015-002762
Application 11/531,867
BACKGROUND
According to Appellants, the application relates to a surface that
generates haptic feedback that is localized to a specific region of the surface.
Spec. i-fi-f l-2. Claim 1 is representative and is reproduced below with
disputed limitations emphasized:
1. A surface that generates a haptic feedback, said
surface comprising:
a first region having a first level of stiffness;
a second region having a second level of stiffness; and
a third region having a third level of stiffness;
wherein said second region completely surrounds said
third region;
wherein said second level of stiffness is less than said
first level of stiffness and said third level of stiffness;
wherein said second region and said third region define a
deformation region, wherein an actuator is coupled to an area
outside of said deformation region, wherein the actuator
generates the haptic feedback that is completely isolated within
said deformation region, and wherein the haptic feedback
comprises a vibration of the deformation region;
wherein the actuator comprises a plunger that contacts
the deformation region when power is not applied to the
actuator;
wherein the deformation region comprises a front side
that is contacted by a user, and a back side that is opposite the
front side, and the plunger contacts the deformation region on
the back side;
wherein when power is applied to the actuator, a force is
applied that moves the plunger, wherein the movement of the
plunger moves the deformation region in a direction
substantially perpendicular to the surface.
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Appeal2015-002762
Application 11/531,867
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal:
Coulon et al. ("Coulon")
Fish
Aarts et al. ("Aarts")
Hayward et al.
("Hayward")
Schoener et al.
("Schoener")
us 5,717,429
US 2002/0044132 Al
US 6,411,280 Bl
US 2004/0164971 Al
US 2007/0182718 Al
REJECTIONS
Feb. 10, 1998
Apr. 18, 2002
June 25, 2002
Aug.26,2004
Aug. 9, 2007
Claims 1, 3, 4, 6, 9, 11-13, 15, 16, 20, 21, 23, and 24 stand rejected
under pre-AIA (America Invents Act) 35 U.S.C. § 103(a) as being
unpatentable over Fish in view of Coulon and Aarts. Final Act. 3.
Claims 5, 8, 17, and 19 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Fish in view of Coulon, Aarts, and
Hayward. Id. at 11.
Claims 22 and 25 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Fish in view of Coulon, Aarts, and Schoener. Id.
at 13.
Our review in this appeal is limited only to the above rejections and
issues raised by the Appellants. We have not considered other possible
issues that have not been raised by Appellants and which are, therefore, not
before us. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Application 11/531,867
ISSUES
1. Did the Examiner err in finding that the combination of Fish,
Coulon, and Aarts teaches or suggests "wherein when power is applied to
the actuator, a force is applied that moves the plunger, wherein the
movement of the plunger moves the deformation region in a direction
substantially perpendicular to the surface," as recited in claim 1?
2. Was the Examiner's rationale for modifying Fish based on Coulon
and Aarts erroneous?
3. Did the Examiner err in finding that the combination of Fish,
Coulon, and Aarts teaches or suggests "wherein said deformation region
moves via contact with the actuator to generate the haptic feedback," as
recited in claim 6?
4. Did the Examiner err in finding that the combination of Fish,
Coulon, and Aarts teaches or suggests "wherein said actuator comprises a
smart material," as recited in claim 13?
5. Did the Examiner err in finding that the combination of Fish,
Coulon, and Aarts teaches or suggests "wherein said generating comprises
moving the deformation region via contact with the plunger on the rear side
when power is applied to the actuator to generate the haptic effect," as
recited in claim 21?
6. Did the Examiner err in rejecting claims 22 and 25 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Fish in view of Coulon,
Aarts, and Schoener?
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Application 11/531,867
DISCUSSION
35 U.S. C. § 103: Claims 1, 3-5, 8, 9, 11, 12,
15-17, 19, 20, 23, and 24
After review of Appellants' arguments and the Examiner's findings
and reasoning, we determine that Appellants have not identified error in the
Examiner's rejection of claim 1. Accordingly, we affirm the rejection for
reasons set forth by the Examiner in the Final Office Action and the Answer.
See Final Act. 4; Ans. 5---6. We add the following for emphasis.
Appellants argue that Fish fails to suggest or disclose "wherein when
power is applied to the actuator, a force is applied that moves the plunger,
wherein the movement of the plunger moves the deformation region in a
direction substantially perpendicular to the surface," as recited in claim 1,
because in Fish "current is only applied to magnet wire 108 when a haptel
[(haptic element)] position sensor detects a movement of touchable surface
of the haptel." Reply Br. 8 (citing Fish i-fi-193-103).
We agree with the Examiner's finding that Fish teaches all of the
disputed features and does not describe, as argued by Appellants, that "a
force is only applied to the haptel upon the detection of movement of the
haptel." Ans. 5. Therefore, we find Appellants' argument that Fish fails to
suggest all of the disputed features unpersuasive.
In addition, the Examiner finds that Fish would still suggest the
disputed features, "even assuming that a force is only applied to the haptel
upon the detection of movement of the haptel, where the pressing of the
touchable surface of the haptel causes the haptel to move in a vertical
direction" because the pressing of a touchable surface by a user suggests
"power is applied to [the] actuator." Id. at 5---6.
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Application 11/531,867
Appellants contend "this position is incorrect because the pressing of
the touchable surface (i.e., the alleged 'power') is being applied to the haptel
rather than the actuator." Reply Br. 8. We disagree with Appellants, noting
the Examiner correctly finds that, in Fish, when a user applies a force that
moves the plunger (any haptel of haptel grid 604) "the movement of the
plunger moves the deformation region (region 606 in figure 6a) in a
direction substantially perpendicular to the surface (vertical direction
force)." Ans. 6; see also Fish i-f 55 ("grid overlay 606 is affixed to haptel
grid 604 at the centers of the haptel surfaces" thus indicating that a force
applied to the haptel (via grid overlay 606) would also be applied to the
actuator).
Accordingly, Appellants do not establish that the combination of Fish,
Coulon, and Aarts fails to teach or suggest all of the features of claim 1.
Appellants argue that "there is no suggestion or motivation" (Appeal
Br. 14) to combine Fish, Coulon, and Aarts because the combination "would
render the [light-weight] keyboard of Coulon unsatisfactory for its intended
purpose" by increasing the size and weight of the key structure from Coulon
to accommodate the haptel structure described in Fish and the mouse
structure described in Aarts. Id. at 15. Appellants' argument is based on the
assertion that "the Final Office Action proposed to combine the haptel 500
from Fish with the key from Coulon that includes a finger pad 210, a flexible
layer 204, and a rib 214." Id. at 14 (citing Final Act. 5-8).
We find Appellants' arguments unpersuasive, however, because
Appellants' contention does not address the Examiner's combination, which
proposes modifying Fish to incorporate the teachings of Coulon and Aarts.
For example, contrary to Appellants' assertion, the Final Office Action does
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Application 11/531,867
not propose to "increas[ e] the size and weight of the key structure from
Coulon" to accommodate the haptel structure described in Fish. Appeal
Br. 14. Rather, the Final Office Action states "it would have been obvious
to one of the ordinary skill in the art at the time of the invention was made to
incorporate different regions of stiffness in order to provide tactile feedback
as taught by Coulon." Final Act. 7. The Examiner further clarifies in the
Answer that "Examiners [sic] is modifying Fish in view of Coulon for the
purpose of regions with plurality levels of stiffness ... not ... for the
purpose of light-weight profile." Ans. 4. "The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). See
also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review."); In re Nievelt, 482 F.2d 965, 968
(CCP A 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures."). Rather, "if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Here, the Examiner proposes improving the actuators of Fish in view
of Coulon' s technique of providing regions with plurality levels of stiffness.
Ans. 4. We, therefore, find Appellants' argument that the cited combination
would render Coulon unsatisfactory for its intended purpose unpersuasive.
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Application 11/531,867
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1.
We also sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claims 9 and 20, which Appellants argue are patentable for
similarly unpersuasive reasons. App. Br. 18, 20.
Appellants do not make any other substantive argument regarding the
rejection of dependent claims 3-5, 8, 11, 12, 15-17, 19, 23, and 24. App.
Br. 17-29. Therefore, we likewise sustain the rejections of these claims
under 35 U.S.C. § 103(a).
35 U.S.C. § 103: Claim 6
Appellants contend that Fish fails "to disclose or suggest, at least,
"wherein said deformation region moves via contact with the actuator to
generate the haptic feedback," as recited in claim 6.
We find Appellants' argument unpersuasive because we agree with
the Examiner's finding that Fish's stretchable overlay 606 moves via contact
with the actuator (any haptel ofhaptel grid 604) "where haptels 604 are
considered part of the actuator to generate the haptic feedback." Ans. 6-7;
see also Fish i-f 55 (describing that "grid overlay 606 is affixed to haptel grid
604").
We, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claim 6.
35 U.S.C. § 103: Claim 13
Appellants contend that Fish fails to disclose or suggest, "wherein
said actuator comprises a smart material," as recited in claim 13. Appeal
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Application 11/531,867
Br. 19. Specifically, Appellants contend "Fish fails to explicitly disclose or
suggest that the electromagnetic linear actuator can be replaced with an
actuator that includes smart material." Id.
We find Appellants' argument unpersuasive because the argument is
not commensurate with the scope of the claim, which merely recites that the
"actuator comprises a smart material." Appeal Br. 33 (Claims App'x).
For example, the Examiner finds that Fish teaches that a force sensor,
such as a piezoelectric sensor can be added to the design of the actuator (i.e.
haptels 604). Ans. 7-8 (citing Fish i-f 108). The Examiner further finds that
Appellants' Specification indicates that a smart material includes
piezoelectric materials. Id. (citing Spec. i-f 20). Based on the Examiner's
findings we agree that Fish teaches an actuator that comprises a smart
material as recited in claim 13.
We, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claim 13.
35 U.S. C. § 103: Claim 21
Appellants argue that Fish fails "to disclose or suggest, at least,
"wherein said generating comprises moving the deformation region via
contact with the plunger on the rear side when power is applied to the
actuator to generate the haptic effect," as recited in claim 21. Appeal Br. 21.
We find Appellants' argument unpersuasive because we agree with
the Examiner's finding that Fish generates a haptic signal by moving
stretchable overlay 606 via contact with any haptel of haptel grid 604
"where haptels 604 are considered part of the actuator to generate the haptic
feedback." Ans. 6-7. We also agree with the Examiner's finding that Fish
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Application 11/531,867
teaches when electric power in the form of current is applied to the actuator,
a force (for example electric force) is applied that moves the plunger
(moving assembly or haptels 604 in figure 6a). Id. at 5 (citing Fish i-fi-180-
81 ).
We, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claim 21.
35 U.S.C. § 103: Claims 22 and 25
Appellants contend that the Examiner has erred in rejecting claims 22
and 25 under 35 U.S.C. § 103(a) because, in the proposed combination of
Fish, Coulon, Aarts, and Schoener, "Schoener explicitly teaches away from
replacing a tactile effect produced by a raised plunger surface with a tactile
effect produced by a vibration." Appeal Br. 27 (citing Schoener i19).
This argument is not persuasive because the Examiner relies on
Schoener for its teaching of illuminating a haptic element rather than for
Schoener' s raised plunger surface structure. Final Act. 13 (citing Schoener
i121). As stated above, "[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference .... Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." Keller at 425. For example, "if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill." KSR at 417.
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Application 11/531,867
Here, the Examiner properly relies on Schoener's illumination
technique to improve a similar device in the same way. For example, the
Examiner states:
it would have been obvious to one of the ordinary skill in the art
at the time of the invention was made to illuminate an actuator
system as taught by Schoener into Fish, Coulon, and Aarts with
the benefit that the operator control panel may be visually
underlined by the illumination, and easily located even at night
as stated by Schoener in [0021].
Final Act. 13.
Moreover, a reference may be said to teach away when it "suggests
that the line of development flowing from the reference's disclosure is
unlikely to be productive of the result sought by the applicant. In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994). Beyond stating that Schoener teaches
away, Appellants do not attempt to persuade us that, as to the argued
limitation, the Schoener reference suggests that the line of development
flowing from the reference's disclosure is unlikely to be productive of the
result sought by the Appellants, which result here includes "generating
illumination at the haptic enabled location," as claimed, rather than
vibration. Appeal Br. 35.
Accordingly, on the record before us, we sustain the Examiner's
rejection of claims 22 and 25.
35 u.s.c. § 103
Appellants present additional arguments with respect to the remaining
dependent claims. Appeal Br. 17-29.
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We do not find these arguments persuasive. Rather, we find that the
Examiner has provided a complete response to Appellants' arguments
supported by a preponderance of evidence. Final Act. 8-14; Ans. 6-9. As
such, we adopt the Examiner's findings and explanations provided therein
(id.) and we sustain the Examiner's rejection of the remaining dependent
claims under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1, 3---6, 8, 9, 11-
13, 15-17, and 19-25 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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